Notice of Pre-AIA or AIA Status
This action is made in response to the amendments/remarks filed 03/25/2026. This action is made FINAL.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment filed 03/25/2026 has been entered. Claims 1-20 remain pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claims 1, 11, and 20, the limitations “a periodic automated maintenance operation that performs database write transactions and synchronization communications between a server and the one or more databases”, “automatically controlling… execution of the database maintenance process”, “initiating a database write transaction that updates a provider record and transmitting a synchronization communication to at least one remote computing system when the claim likelihood score for a corresponding provider exceeds a threshold”, and “inhibiting initiation of the database write transaction and preventing transmission of the synchronization communication when the claim likelihood score for the corresponding provider is below a threshold” recite elements without support in the original disclosure (i.e., introduces new matter). The specification lacks support for an automated maintenance operation that includes performing database write transactions and synchronization communications between a server and one or more databases. Additionally, the specification lacks support for initiating and inhibiting database write transactions and lacks support for transmitting and preventing transmission of the synchronization communication when the claim likelihood score exceeds or is below a threshold. Therefore, these limitations are new matter. See MPEP 608.04.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent Claims
Step 1 analysis:
Claims 1 and 20 are drawn to a method (i.e., process), and Claim 11 is drawn to a system, which are all within the four statutory categories. (Step 1 – Yes, the claim falls into one of the statutory categories).
Step 2A analysis – Prong One:
Claim 1 recites:
A computer-implemented method, comprising:
receiving, by one or more processors, provider data including historical claim information from each of one or more providers;
applying, by the one or more processors, a model to the historical claim information to generate a respective expected number of claims for each of the one or more providers;
normalizing, by the one or more processors, the respective expected number of claims for each of the one or more providers;
determining, by the one or more processors and based on the normalized respective expected number of claims, a respective claim likelihood score for each of the one or more providers; and
ranking, by the one or more processors, the one or more providers based on each provider's respective claim likelihood score;
scheduling, by the one or more processors and based on the ranking, execution of a data maintenance process for provider data stored in one or more databases and associated with at least a portion of the one or more providers, the database maintenance process comprising a periodic automated maintenance operation that performs database write transactions and synchronization communications between a server and the one or more databases; and
automatically controlling, by the one or more processors and responsive to the respective claim likelihood score, execution of the database maintenance process by allocating computing resources between the server and the one or more databases, wherein the automatically controlling comprises:
initiating a database write transaction that updates a provider record and transmitting a synchronization communication to at least one remote computing system when the claim likelihood score for a corresponding provider exceeds a threshold; and
inhibiting initiation of the database write transaction and preventing transmission of the synchronization communication when the claim likelihood score for the corresponding provider is below the threshold.
The series of steps as recited above, excluding the underlined portions, describes managing personal behavior or relationships or interactions between people including following rules or instructions, and therefore fall within the scope of certain methods of organizing human activity. Fundamentally, the method is that of a person gathering claim information from a provider and determining an expected number of claims to rank the providers through a series of instructions, which encompasses a person interacting with another individual including following rules or instructions. Furthermore, scheduling execution of a data maintenance process comprising a periodic automated maintenance operation that performs database write transactions and synchronization communications between a server and the one or more databases, initiating a database write transaction that updates a provider record, inhibiting initiation of the database write transaction and preventing transmission of the synchronization communication when the claim likelihood score for the corresponding provider is below the threshold, all recite an abstract idea of methods of organizing human activity. Accordingly, the claim recites an abstract idea of managing interactions between people.
The series of steps of applying a model to the provider information, generating a respective expected number of claims for them, assigning the providers a score, ranking the providers, and scheduling maintenance also falls within the “mental processes” grouping of abstract ideas, and describes concepts that can be performed in the human mind through observation, evaluation, judgement, and opinion. Applying a model to the provider information, generating a respective expected number of claims for them, assigning the providers a score, ranking the providers, and scheduling maintenance can all be practically performed in the human mind, with or without the use of a physical aid. Therefore, the claim recites an abstract idea of a mental process.
Claims 11 and 20 recite/describe nearly identical steps as claim 1 (and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and these claims are therefore determined to recite an abstract idea under the same analysis.
Claim 20 also falls within the “mathematical concepts” grouping of abstract ideas, in addition to the abstract ideas set forth in claim 1. The concept of “applying an Autoregressive Integrated Moving Average (ARIMA) model to the historical claim information” recites mathematical calculations since the ARIMA model is a mathematical operation. Therefore, Claim 20 recites an abstract idea of a mathematical concept.
Step 2A analysis – Prong 2:
This judicial exception is not integrated into a practical application. Specifically, independent claims 1, 11, and 20 recite the following additional elements beyond the abstract idea: a computer, one or more processors, one or more non-transitory computer-readable media, controlling by the one or more processors execution of the database maintenance process by allocating computing resources between the server and the one or more databases. These limitations are recited at a high level of generality and amount to no more than mere instructions to apply the exception using generic computer components. Specifically, the server and databases are general purpose computing components being used to execute the abstract idea. The limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
Specifically, the computer may be implemented as or incorporated into various devices, such as a personal computer (PC), a tablet PC, a set-top box (STB), a personal digital assistant (PDA), a mobile device, a palmtop computer, a laptop computer, a desktop computer, a communications device, a wireless telephone, a landline telephone, a control system, a camera, a scanner, a facsimile machine, a printer, a pager, a personal trusted device, a web appliance, a network router, switch or bridge, or any other machine capable of executing a set of instructions (specification par. 146). The processor is one or more processors, digital signal processors, application specific integrated circuits, field programmable gate arrays, servers, networks, digital circuits, analog circuits, combinations thereof, or other now known or later developed devices for analyzing and processing data (specification par. 147). The memory may also include external storage devices or databases including a hard drive, compact disc ("CD"), digital video disc ("DVD"), memory card, memory stick, floppy disc, universal serial bus ("USB") memory device, or any other device operative to store data (specification par. 148).
Furthermore, the limitation “transmitting a synchronization communication to at least one remote computing system” is mere data outputting. Thus, the limitation is insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). In addition, all uses of the recited judicial exceptions require such data gathering and output, and, as such, these limitations do not impose any meaningful limits on the claim. This limitation amounts to necessary data gathering and outputting. See MPEP 2106.05.
The additional elements do not show an improvement to the functioning of a computer or to any other technology, rather the additional elements perform general computing functions and do not indicate how the particular combination improves any technology or provides a technical solution to a technical problem. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, Claims 1, 11, and 20 are directed to an abstract idea without practical application. (Step 2A – Prong 2: No, the additional elements are not integrated into a practical application).
Step 2B analysis:
As discussed above in “Step 2A analysis – Prong 2”, the identified additional elements in Independent Claims 1, 11, and 20 are equivalent to adding the words “apply it” on a generic computer, and/or generally link the use of the judicial exception to a particular technological environment or field of use. Therefore, the claims as a whole do not amount to significantly more than the judicial exception itself.
For the role of a computer in a computer implemented invention to be deemed meaningful in
the context of this analysis, it must involve more than performance of “well- understood, routine, [and]
conventional activities previously known to the industry.” Further, “the mere recitation of a generic
computer cannot transform a patent ineligible abstract idea into a patent-eligible invention.”
The applicant’s specification discloses: the computer may be implemented as or incorporated into various devices, such as a personal computer (PC), a tablet PC, a set-top box (STB), a personal digital assistant (PDA), a mobile device, a palmtop computer, a laptop computer, a desktop computer, a communications device, a wireless telephone, a landline telephone, a control system, a camera, a scanner, a facsimile machine, a printer, a pager, a personal trusted device, a web appliance, a network router, switch or bridge, or any other machine capable of executing a set of instructions (specification par. 146). The processor 502 is one or more processors, digital signal processors, application specific integrated circuits, field programmable gate arrays, servers, networks, digital circuits, analog circuits,
combinations thereof, or other now known or later developed devices for analyzing and processing data (specification par. 147).
As stated above, the limitation “transmitting a synchronization communication to at least one remote computing system” is mere data outputting. Thus, the limitation is insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). In addition, all uses of the recited judicial exceptions require such data gathering and output, and, as such, these limitations do not impose any meaningful limits on the claim. This limitation amounts to necessary data gathering and outputting. See MPEP 2106.05.
Generic computer components recited as performing generic computer functions that are well-
understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. Here, the claim limitation “transmitting a synchronization communication to at least one remote computing system” is similar to receiving and sending information
over a network (Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary
computer to forward information); OJP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115
USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information
over a network); See MPEP 2106.05(d)(ll)(i)).
The claims do not include additional elements that are sufficient to amount to significantly more
than the judicial exception because, as discussed above with respect to integration of the abstract idea
into a practical application, using the additional elements to perform the steps for provider prioritization amount to no more than using computer related devices to implement the abstract idea.
The use of a computer or processor to merely automate or implement the abstract idea cannot
provide significantly more than the abstract idea itself. (See MPEP 2106.05(f) where mere instructions to
apply an exception does not render an abstract idea patent eligible). There is no indication that the
additional limitations alone or in combination improves the functioning of a computer or any other
technology, improves another technology or technical field, or effects a transformation or reduction of a
particular article to a different state or thing. Therefore, the claims are not patent eligible.
The Examiner has therefore determined that no additional element, or combination of
additional claims elements is/are sufficient to ensure the claims amount to significantly more than the
abstract idea identified above (Step 2B: Independent claims - NO).
Dependent Claims
Dependent Claims 2-10, and 12-19 are directed towards elements used to describe the providers, the model, and the determination of the claim likelihood score. These elements include: each plurality of providers belonging to a grouping of providers, each grouping of providers being associated with a respective model, the model being a time-series model, the model being an Autoregressive Integrated Moving Average (ARIMA) model, a population of providers, an attribute of the population of providers, a claim likelihood score category, setting bounds of the categories, and adjusting the categories dynamically based on the population. Each of these elements amounts to a form of managing personal behavior or relationships or interactions between people and mental processes, and therefore fall within the same abstract idea identified in independent claims 1 and 11, i.e., method for organizing human activity and mental processes.
Dependent Claims 5 and 15 recite “the time-series model is an Autoregressive Integrated Moving Average (ARIMA) model”, which falls within the “mathematical concepts” grouping of abstract ideas, in addition to the abstract ideas set forth in independent claims 1 and 11. The concept of applying an Autoregressive Integrated Moving Average (ARIMA) model to the claim information recites mathematical calculations since the ARIMA model is a mathematical operation. Therefore, Claims 5 and 15 recite an abstract idea of a mathematical concept. (Step 2A – Prong 1: Yes, the claims are abstract).
Dependent Claims 2-10 recite the additional element of a computer, specifically stating “the computer-implemented method…”. This limitation is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using generic computer components. The limitation does not impose any meaningful limits on practicing the abstract idea, and therefore does not integrate the abstract idea into a practical application (see MPEP 2106.05(f)). Dependent Claims 12-19 do not include any additional elements. (Step 2A – Prong 2: No, the additional elements are not integrated into a practical application).
The applicant’s specification discloses: the computer may be implemented as or incorporated into various devices, such as a personal computer (PC), a tablet PC, a set-top box (STB), a personal digital assistant (PDA), a mobile device, a palmtop computer, a laptop computer, a desktop computer, a communications device, a wireless telephone, a landline telephone, a control system, a camera, a scanner, a facsimile machine, a printer, a pager, a personal trusted device, a web appliance, a network router, switch or bridge, or any other machine capable of executing a set of instructions (specification par. 146).
The dependent claims as a whole do not amount to significantly more than the judicial exception itself. The use of a computer or processor to merely automate or implement the abstract idea cannot provide significantly more than the abstract idea itself. (See MPEP 2106.05(f) where mere instructions to apply an exception does not render an abstract idea patent eligible). There is no indication that the additional limitations alone or in combination improves the functioning of a computer or any other technology, improves another technology or technical field, or effects a transformation or reduction of a particular article to a different state or thing. Therefore, the dependent claims are not patent eligible.
The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claims amount to significantly more than the abstract idea identified above (Step 2B: Dependent claims - NO).
Response to Arguments
Applicant's arguments filed 03/25/2026 have been fully considered but they are not persuasive. With respect to the previous 101 rejection, Applicant argues that independent claims 1, 11, and 20 do not recite the abstract ideas of methods of organizing human activity, mental processes, or mathematical concepts. The examiner respectfully disagrees. Applying a model to historical information, normalizing data, determining a score, ranking providers based on a score, and scheduling data maintenance are all steps that can practically be performed in the human mind, thus making them abstract ideas. The database maintenance process comprising a periodic automated maintenance operation that performs database write transactions and synchronization communications between a server and the one or more databases would also fall within the abstract idea of mental processes, under the same analysis as the scheduling data maintenance step, because this portion is merely descriptive and is not actively recited as being performed. The method also recites data being exchanged between two people including receiving provider data, initiating a database write transaction that updates a provider record when the claim likelihood score exceeds a threshold and inhibiting initiation of the database write transaction and preventing transmission of the synchronization communication when the score is below a threshold, which would fall into the methods of organizing human activity category of abstract ideas. The ARIMA model used to generate a number of claims recites a mathematical calculation using a formula (See Applicant’s Specification para. 129), which also recites an abstract idea.
Applicant also argues that the abstract idea is integrated into a practical application by providing a significant technical advantage over traditional approaches to data maintenance with the steps for scheduling data maintenance activities for providers with higher claim likelihood scores and allocating data maintenance resources to only update specific provider data, however, the examiner respectfully disagrees. The step for scheduling data maintenance is part of the abstract idea of mental processes and methods of organizing human activity because it recites steps that can be performed in the human mind and also requires interaction between people. The database maintenance process comprising a periodic automated maintenance operation that performs database write transactions and synchronization communications between a server and the one or more databases would also fall within the abstract idea of mental processes, because this portion is merely descriptive and is not actively recited as being performed, therefore, the scheduling step does not integrate the abstract idea into a practical application. Furthermore, the applicant argues the analysis under Step 2A - Prong 2 improperly dissects the claim and does not evaluate the ordered combination of claim elements, however, the examiner respectfully disagrees. The claims recite the additional elements of “one or more processors” and “a computer” being used to carry out the functions of the method, thus are being used to carry out the abstract idea. When considered separately and as an ordered combination, these additional elements perform general computing functions and do not indicate how the particular combination improves any technology or provides a technical solution to a technical problem, and amount to no more than mere instructions to apply the exception using generic computer components. Therefore, the improvement for the claimed invention lies in the abstract idea itself in view of the claims and para. 0027-0028 of the Applicant’s specification.
Additionally, the applicant argues “allocating data maintenance resources” is not mere data gathering and output, and the examiner agrees. However, it was further found that the step for controlling by the one or more processors execution of the database maintenance process by allocating computing resources between the server and the one or more databases, was found to be no more than mere instructions to apply the exception using generic computer components because allocating computing resources between the server and databases is merely using the server and databases (i.e., generic computing components) to execute the abstract idea. Therefore, the step for allocating computing resources does not integrate the abstract idea into a practical application.
Applicant argues the claims recite significantly more than the judicial exception under Step 2B, however, the examiner respectfully disagrees. As stated above, when considered separately and as an ordered combination, the additional elements perform general computing functions and do not indicate how the particular combination improves any technology or provides a technical solution to a technical problem, and amount to no more than mere instructions to apply the exception using generic computer components. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above with respect to integration of the abstract idea into a practical application, using the additional elements to perform the steps for provider prioritization amount to no more than using computer related devices to implement the abstract idea.
Additionally, the applicant argues the amendments integrate the abstract idea into a practical application, however, the examiner respectfully disagrees. Applicant’s amendment reciting scheduling and execution of a database maintenance process that performs database write transactions and synchronization communications between a server and one or more databases does not integrate the abstract idea, and it is merely a description of the database maintenance process and is not actively recited as being performed. Therefore, this limitation falls within the abstract idea of methods of organizing human activity. The amendment reciting automatically initiating those transactions only when the claim likelihood score exceeds a threshold while inhibiting the transactions and preventing the associated communications when the score is below a threshold, was found to be abstract as stated above, and therefore does not integrate the abstract idea. Transmitting a synchronization communication to at least one remote computing system was found to be insignificant extra-solution activity that was well-understood, routine, and conventional because it is similar to receiving or transmitting data as per MPEP 2106.05(d)(II), and therefore, also does not integrate the abstract idea or provide significantly more than the abstract idea itself. Therefore, the rejection under 35 U.S.C. 101 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXIS K VAN DUZER whose telephone number is (571)270-5832. The examiner can normally be reached Monday thru Thursday 8-5 CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fonya Long can be reached at (571) 270-5096. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.K.V./ Examiner, Art Unit 3682
/EVANGELINE BARR/ Primary Examiner, Art Unit 3682
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